Irides: Weekly patent litigation update

The Irides Weekly Update is our round-up of patent litigation news highlights from around the world. Taking its name from the plural of “iris” - a nod to the ability of Irides to see what’s happening around the world.

Our latest edition - 1 December 2023 - is below:

EPO

Technical Board of Appeal (TBA) releases reasons for decision in T116/18

In November 2021, the board in T116/18 referred a series of questions to the Enlarged Board of Appeal (EBA) on plausibility. The EBA issued its decision on these questions in G2/21. On 27 November 2023, the TBA released the full reasons for its decision of 28 July 2023, in which it had found that the patentee was entitled to rely on post-published evidence, and thus refused the opponent’s appeal and upheld the patent.

In paragraph 2 of its order, the EBA stated:

“A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention.”

The decision is of interest as it provides an interpretation of this paragraph. In particular, the TBA found that:

1. The EBA did not hold that a patent applicant can always rely on a purported technical effect, and the test set out is intended to prevent the filing of applications purely directed to speculative inventions.
    
2. The test under paragraph 2 has two steps that are cumulative; the technical effect must be encompassed by the technical teaching (referred to as requirement (1)) and be embodied by the same originally disclosed invention (requirement (2)).
    
3. The term “technical teaching” which is new legal language to the EPO has the same meaning has “same originally disclosed invention”.
    
4. To satisfy requirement (1), the purported technical effect need only be conceptually within the broadest technical teaching of the application as filed; there is no need for a literal disclosure or positive verbal statement. Instead, it is sufficient if the skilled person recognises that the purported effect is necessarily relevant to the claimed subject-matter. 
    
5. The TBA considered whether requirement (2) meant that a positive verbal statement about the effect must be present in the application as filed. It held that this approach would correspond to the strict "gold standard" of direct and unambiguous disclosure for assessing e.g. added matter under art. 123(2) EPC. The TBA found that this cannot be the case; the EBA used less strict words than that of the gold standard and so cannot have intended such a strict approach. Further, such a test would render requirement (1) superfluous.
    
6. Therefore, the TBA concluded that requirement (2) is met unless the skilled person would have a legitimate reason to doubt that the purported technical effect can be achieved with the claimed subject-matter. Such a test does not require experimental proof or a positive verbal statement.

The TBA also compared this interpretation to the decisions of the English and Dutch Court of Appeals in the apixaban proceedings:

1. Per the TBA, the English Court of Appeal concluded that ‘the "ab initio plausibility standard’ has to be applied when examining effects in relation to inventive step of product claims”.  The TBA held that its interpretation was different.
    
2. The Dutch Court of Appeal found that paragraph 2 of the EBA Order would only be met if the application “expressly and specifically designates the relevant effect as the primary objective of the patent”. Given the finding of the TBA that a positive verbal statement was not required, this was also considered a stricter interpretation than that set out by the TBA.
    

EPO

Acceleration of Oppositions Proceedings

On 7 November 2023, in a letter from EPO President António Campinos to Sir Robin Jacob (former UK Appeal Court Judge), the European Patent Office (EPO) issued a notice, which will be included in the November 2023 EPO Official Journal, stating that EPO opposition proceedings will be accelerated not only when national or Unitary Patent Court (UPC) infringement actions are pending but also when revocation proceedings are pending in national courts or the UPC. Further acceleration will take place irrespective of an explicit request, if the Opposition Division is informed by the national court or the UPC that an infringement or revocation action has been instituted before it.

If acceleration is instituted, the Opposition Division will make every effort to issue the next procedural action within three months of the notice and if applicable, oral proceedings will be scheduled to take place at the earliest possible date.

UK

UK Court overrules UKIPO to find AI invention patentable

On 21 November 2023, former Patents Court Judge, Sir Anthony Mann handed down his decision in Emotional Perception AI v Comptroller General of Patents [2023] EWHC 2948 (Ch), finding that the subject patent application relating to an artificial neural network (or “ANN”, a kind of method in artificial intelligence) was not excluded from protection for being a computer program.

The patent application in suit (the application) claimed a system which provided media recommendations (such as music or videos) to a user with the help of an ANN. The system worked by training an ANN to relate computer-measured properties of the media file (such as the tone, timbre or speed of a music track) to subjective “semantic” properties of the file, which are natural language descriptions of how a human might perceive the media (such as happy, sad or relaxing) through pairwise comparison of training files. The trained system could then be used to provide media file recommendations to a user.

The Application by Emotional Perception AI had been rejected by the UKIPO hearing officer on the grounds that s. 1(2)(c) of the Patents Act 1977 excludes from patent protection “a program for a computer... as such”, and an ANN would fall within the scope of “program for a computer”. Emotional Perception appealed on the grounds that:

1. There was no relevant computer program, and the exclusion is not engaged at all; and
    
2. Even if there was a computer program, the exclusion does not apply because the claim reveals a technical contribution, and the claim is not to a program for a computer program “as such”.

Sir Anthony accepted the first ground of appeal. Although he held that the training of an ANN could involve computer programming activity, the claims related at a more general level to using pairs of files for training and setting parameters and objectives accordingly. At this more general level, the ANN was not implementing instructions given to it by a human. The claim was therefore not a computer program and not excluded from patentability.

Although his finding with respect to ground (1) made a decision on ground (2) unnecessary, Sir Anthony went on to consider if the application gave rise to a technical contribution. The judge noted that there was a line of case law where the mere involvement of a computer or computer program did not necessarily invoke the statutory exclusion. It was held that the system’s selection and output of a file which had been identified as being “semantically similar” based on its analysis of the computer-measured data that the ANN had worked out for itself was a “technical effect outside the computer”, thereby escaping the statutory exclusion following the test outlined in Aerotel.

For procedural reasons, the judge declined to decide as to whether a claim to an ANN or the algorithm by which the ANN was trained would be a “mathematical method” as excluded by statute.

This decision may have implications in future as it could imply the patentability of several inventions which rely on the use of an ANN.